lieved, especially in the academic research community, that uses of patented inventions purely for research were shielded from infringement liability by an experimental-use exception first articulated in 19th-century case law. But in Madey v. Duke University,22 a suit brought by a former Duke University professor and laboratory director, the Federal Circuit Court upended that notion by holding that there is no protection for research conducted as part of the university’s normal “business” of investigation and education, regardless of its commercial or noncommercial character.

By the time Madey arrived before the court, most universities had established intellectual-property offices, and there were clear difficulties in distinguishing commercially motivated research from “pure” academic research. The court, without addressing that issue directly, decided that for a major research university even noncommercial research projects “unmistakably further the institution’s legitimate business objectives, including educating and enlightening students and faculty participating in these projects.”23 Activities that further “business objectives,” including research projects that “increase the status of the institution and lure lucrative research grants, students and faculty,” are ineligible for an experimental use defense.

Thus, the court regarded virtually all research as a means of advancing the “legitimate business objectives” of a university. The result, wrote one observer, “is a seemingly disingenuous opinion that neither conforms to the implications of precedent nor explains the reasons for steering the law in a different direction, but pretends that prior courts never meant to give research science special treatment.”24 Because the courts have not traced the experimental-use defense, case by case, as a tool for mediating between the private interests of patent owners and the public interest of open scientific progress, that issue awaits resolution.

The 2004 National Academies study offers two alternatives.25 The preferred solution would be the passage of appropriately narrow legislation to shield some research uses of patented inventions from infringement liability. If progress on the legislative front is delayed, the Office of Management and Budget might consider extending to grantees the “authorization and consent” protection that is provided to contractors, provided that such protection is strictly limited to research and does not extend to resulting commercial products or services.

Citation Manager

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8 What Actions Should America Take in Economic and Technology Policy to Remain Prosperous in the 21st Century? ."
Rising Above the Gathering Storm: Energizing and Employing America for a Brighter Economic Future . Washington, DC: The National Academies Press,
2007 .